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62d Congress, 



SENATE. 



[ Document 

I No. 555. 









CODIFICATION OF THE PATENT LAWS. 



MR. BROWN PRESENTED THE FOLLOWING STATEMENT OF THE 
COMMISSIONER OF PATENTS RELATIVE TO THE BILL (S. 6273) 
TO CODIFY, REVISE, AND AMEND THE LAWS RELATING TO 
PATENTS. 



April 11, 1912. — Referred to the Committee on Patents and ordered to be printed. 



The statutes which are at present in force are in the main the same 
as in the act of revision which was passed in 1870. It is urged by some 
that the different industrial conditions which exist at the present 
time, especially in respect to the power of large corporations which is 
based upon patents, seem to necessitate a revision of the existing laws. 
Furthermore, a complicated procedure exists in the Patent Office,' 
under the present laws which, in my. opinion, should be materially 
simplified in the interest of expediting the final determination of cases 
pending in the office and of saving time and expense to the inventor, 
and also for the purpose of placing the patented invention in the 
hands of the public at the earliest possible moment. 

One of the most important things which, in my opinion, should 
be accomplished is the establishment of the Patent Office as an 
independent bureau. Patents were originally granted under the 
act of 1790 by a tribunal consisting of the Secretary of State, 
the Secretary of War, and the Attorney General, and patents 
granted by this board were signed by the President. From 1790 to 
1802 the Patent Office was under the jurisdiction of the State Depart- 
ment and the work was performed by a clerk of that department. In 
1802 Dr. Thornton was appointed as superintendent of the Patent 
Office, and for 26 years exercised full control of its force. In 1836 the 
Patent Office was reorganized and made a bureau of the State Depart- 
ment, its chief being given the designation of Commissioner of Patents. 
He was appointed by the President, with the advice and consent of the 
Senate. Under the law of 1849 the Patent Office was transferred to 
the Interior Department and has been a bureau thereof since that 
date. The Patent Office has nothing in common with any of the other 
bureaus of the Interior Department, and Mr. Secretary Fisher, in his 
report to Congress for the fiscal year ending June 30, 1911, has indi- 
cated that in his opinion it is improperly made a part of the Interior 
Department. In that report the Secretary calls attention to the 
inconsistent manner in which the work of the Government has been 



2 CODTFTCATION OF THE PATENT LAWS. <-^p\*r 

divided between the administrative Departments of the Interior, 
Agriculture, and Commerce and Labor, stating that with respect to 
the Interior Department: 

The principal bureaus which were at first placed under it were the General Land 
Office, the Office of Indian Affairs, the Patent Office, and the Pension Office, but as 
new matters were undertaken by the General Government which did not logically 
fall under any of the other departments, they were naturally assigned to the Depart- 
ment of the Interior, which became a sort of administrative "catchall" and has so 
continued, although partially relieved by the establishment of the Department of 
Agriculture and the Department of Commerce and Labor. 

It is difficult to understand why the Patent Office should not have been trans- 
ferred to the latter department upon its creation, although the Patent Office is now 
80 thoroughly organized and systematized and its work so definitely covered by 
statutory and administrative regulations that the matters which come up from it to 
the Secretary of the Interior do not add materially to his work. I am of the opinion, 
however, that if this bureau should be transferred to the Department of Commerce 
and Labor a relationship could be established between it and the head of that depaTt- 
ment which would increase its efficiency and usefulness. 

It is thus seen that the Secretary of the Interior is of the opinion 
that the Patent Office should not form one of the bureaus of the 
Department of the Interior. 

It is difficult to see that there is such relationship between the 
work performed by the Patent Office and that performed by the 
Department of Commerce and Labor or any of its bureaus as would 
necessitate placing the Patent Office mtliin the jurisdiction of the 
Secretary of Commerce and Labor. The function of the Patent Office 
is believed to be wholly distinct from any bureau of any department. 

Senator Piatt, of Connecticut, who had familiarized himself very 
thoroughly with the needs of the Patent Office, in a speech deliv- 
ered March 31, 1884, advocated the creation of the Patent Office 
as an independent department, stating: 

I say that the Patent Office should be made an independent department, not only 
because of the vast importance of the interests which it must care for, but because of 
the treatment which it has received and must continue to receive so long as it remains 
a subordinate branch of the Interior Department. 

In the fu'st place, the Interior Department is overburdened; it is overloaded. No 
one man can discharge its duties properly. Let us see what the Secretary of the 
Interior has to do. He is charged with the supervision of the public business relating 
to patents for inventions; pension and bounty lands; public lands, including mines; 
tiie Indians; education; railroads; the public surveys; the census when directed by 
law; the custody and distribution of public documents; supervision of eleemosynary 
and literary institutions in the District of Columbia. He also exercises certain 
powers and duties in relation to the "Territories. 

Now, take just three branches of the Interior Department: Take the pubhc lands, the 
railroads and their relations to the public lands; take the Indian department, and 
tell me whether any one man can fairly discharge the duties which pertain to those 
three branches of his department. Think of the multiplicity of important cases 
which must come to him for his personal decision. Think of the vast property inter- 
ests which are to be decided in the mineral cases, the land cases, the railroad cases, 
which should receive his personal attention. In addition to all other duties he has 
the appointment and supervision of over 3,300 persons and the executive adminis- 
tration of a department which employs more than 3,300 agents. 

The facts above stated in respect to the Interior Department being 
Overburdened are true at the present time, even more so than at the 
time when Senator Piatt's address was delivered. There have been 
added to the Department of the Interior the Keclamation Service 
and the Bureau of Mines, and it is now proposed to add a Bureau of 
Parks. 

Under the law the Secretary of the Interior has control merely of 
the administrative functions of the Patent Office, and even in this 






CODIFICATION" OF THE PATENT LAWS. 6 

respect he is not given absolute authority, since under section 476 of 
the Revised Statutes all '^ officers, clerks, and employees authorized by 
law for the office shall be appointed by the Secretary of the Interior, 
upon the nomination of the Commissioner of Patents." It thus 
appears that the commissioner has the power of selecting the em- 
ployees with the approval of the Secretary. Furthermore, the com- 
missioner is required by section 494 of the Revised Statutes to — 

^ * * lay before Congress, in the month of January, annually, a report, giving a 
detailed statement of all moneys received for patents, for copies of records or drawings, 
or from any other source whatever; a detailed statement of all expenditures for con- 
tingent and miscellaneous expenses; a list of all patents which were granted during 
the preceding year. 

In this respect the Patent Office differs from any other bureau of 
this department, in that it is required to render a report direct to 
Congress instead of the report for the Patent Office made by the 
Secretary of the Interior. 

Judicial opinions of the Commissioner of Patents are not ap- 
pealable to the Secretary of the Interior, and according to the de- 
cision of the Supreme Court in the case of Butterworth v. Hoe (112 
U. S., 50), he has no power to supervise or control such judicial 
opinions. In that decision the court said: 

It thus appears not only that the discretion and judgment of the commissioner, as 
the head of the Patent Office, is substituted for that of the head of the department, 
but also that that discretion and judgment are not arbitrary but are governed by fixed 
rules of right, according to which the title of the claimant appears from an investiga- 
tion for the conduct of which ample and elaborate provision is made, and that his 
discretion and judgment, exercised upon the material thus provided, are subject to 
a review by judicial tribunals whose jurisdiction is defined by the same statute. In 
no -event could the direction of the Secretary of the Interior extend beyond the terms 
in which it is vested — that is, to the duties to be performed under the law by the com- 
missioner. The supervision of the Secretary can not change those duties nor require 
them to be performed by another, nor does it authorize him to substitute his discre- 
tion and judgment for that of the commissioner when by law the commissioner is 
required to exercise his own, and when that judgment, unless reversed in the special 
mode pointed out, by judicial process, is by law the condition on which the right of 
the claimant is declared to depend. The conclusion can not be resisted that to what- 
ever else supervision and direction on the part of the head of the department may 
extend in respect to matters purely administrative and executive, they do not extend 
to a review of the action of the Commissioner of Patents in those cases in which by law 
he is appointed to exercise his discretion judicially. It is not consistent with the idea 
of judicial action that it should be subject to the direction of a superior in the sense 
in which that authority is conferred upon the head of an executive department in 
reference to his subordinates. Such a subjection takes from it the quality of a judi- 
cial act. That it was intended that the Commissioner of Patents in issuing or with- 
holding patents, in reissues, interferences, and extensions should exercise quasi judi- 
cial functions is apparent from the nature of the examination and decisions he is 
required to make and the modes provided by law according to which, exclusively, 
they may be reviewed. 

Such has been the uniform construction placed by' the department itself upon the 
laws defining the relation of its executive head to the Commissioner of Patents. No 
instance, has been cited in which the right of the Secretary to reverse such action of 
the commissioner in granting or withholding a patent has been claimed or exercised 
prior to that based upon the opinion of the Attorney General in 1881. The jurisdic- 
tion had been previously expressly disclaimed, in 1876, by Secretary Chandler (9 Off. 
Gaz., 403) and by his immediate successor, Mr. Schurz, in 1877, 1878, and 1879 (12 
Off. Gaz., 475; 13 Off. Gaz., 771; 16 Off. Gaz., 220). 

As pointed out by the Supreme Court in the decision just quoted, 
the Commissioner of Patents is a quasi judicial officer whose judicial 
decisions can not be reviewed by any administrative officer. Under 
the law, appeal lies from the decisions of the Commissioner of Pat- 
ents to the Court of Appeals of the District of Columbia, so that the 



4 CODIFICATION OF THE PATENT LAWS. 

only authority remaining in the Secretary of the Interior over the 
Commissioner of Patents is in effect the administrative part of his 
office. It is manifest that such administrative duties as are imposed 
upon the Commissioner of Patents relate only to the carrying out 
of the functions imposed upon him by law in respect to the granting 
of patents. He is not intrusted with the distribution of any moneys, 
but is merely authorized to receive such as are required by law to 
defray the expense of examining and issuing patents. Such moneys 
are paid directly into the Treasury. All books and records kept by 
the Patent Office relate to patents, and to patents alone, and are 
necessarily of a different character from the records of any other 
department. The fees which have been accumulated by the Patent 
Office and covered into the Treasury aggregate more than $7,000,000, 
and none of this vast fund is available to the Patent Office for the 
conduct or improvement of its business. The annual appropria- 
tions of Congress for the Department of the Interior of course include 
certain funds appropriated for the Patent Office, but this bureau 
being one of many, has been unable to properly place its needs before 
Congress, and for that reason has failed to obtain sufficient appro- 
priation for the equipment which is necessary to advantageously 
carry on its business. 

A measure has recently been presented to Congress authorizing the 
construction of a new Patent Office building as a companion building 
to the Library of Congress. It is believed that the Patent Office, like 
the Library of Congress, should be independent and directly under the 
control of Congress. This, in my opinion, would be in consonance 
with the spirit of the Constitution and Congress would have power to 
''promote the progress of science and the useful arts" by securing to 
both authors and inventors the exclusive rights to their respective 
writings and discoveries. On this clause of the Constitution, so far as 
authors are concerned. Congress has provided the Library in which 
their writings may be suitably stored and supervised by an officer 
independent of any department. It seems to me that likewise a 
Patent Office building should be provided and the Patent Office also 
made a separate institution responsible directly to Congress for the 
carrying out of the duties imposed upon it. 

In view of this fact, I have in a draft submitted herewith eliminated 
from the present law any provisions which place the Patent Office 
within the jurisdiction and control of the Secretary of the Interior. 

Section 1 is identical with section 475, Revised Statutes, except in 
respect to the elimination of the words "Department of the Interior/' 

Section 2 consists of a modification of section 476, Revised Statutes, 
to include as an officer in the Patent Office a "First Assistant Com- 
missioner of Patents," which office has been provided for by the appro- 
priation acts since 1909, together with prescribing the duties of the 
First Assistant Commissioner and Assistant Commissioner, as found 
in the annual appropriation acts. 

It has also been amended to require that the commissioner, the 
first assistant commissioner, and the assistant commissioner shall be 
persons of competent legal knowledge and scientific ability to accord 
with the requirements of the present law (sec. 482, R. S.) for the 
quaUfications of persons who shall be eligible to be examiners in 
chief. 



CODIFICATION' OF THE PATENT LAWS. 5 

Section 3, which relates to the salary of the officers and employees 
of the Patent Office, has been revised to set forth such increase in 
numbers as in my opinion are necessary to obtain and retain the proper 
talent for the administration of the patent laws. The section of the 
present law relating to the same is section 477, Revised Statutes. 

Sections 4 and 5 are identical with sections 478, 479, 480, and 481, 
Revised Statutes, except that in section 481 the words ^^ under the 
direction of the Secretary of the Interior" have been canceled. 

Section 6, which corresponds to section 482, Revised Statutes, has 
been amended to provide for a single appellate board consisting of 
the commissioner, the assistant commissioners, and the examiners in 
chief. The function of this board is to consolidate the two appeals 
which now exist in the Patent Office, one to the examiners in chief 
from the primary examiner and another to the commissioner in per- 
son from the examiners in chief. By the elimination of one appeal 
in the Patent Office a great saving of time will be accomplished, as 
well as a considerable saving of expense to the inventor. Bills have 
been introduced in the Sixtieth, Sixty-first, and Sixty-second Con- 
gresses providing for this appellate board, and exhaustive arguments 
have been had before the committees in the House and Senate during 
each Congress. The arguments in support of this bill have been re- 
peatedly presented to Congress in my reports for the calendar years 
1909, 1910, and 1911, and are also found in the hearings before the 
committee in the House of Representatives, especially in respect to 
H. R. 18885, Sixty-first Congress. In my opinion this amendment 
is wholly free from objection and will result in great good to the in- 
ventor and the public. 

Section 7 is identical with section 483, Revised Statutes, except 
for the elimination of the words ''subject to the approval of the 
Secretary of the Interior." 

Section 8 comprises a modification of section 484, Revised Stat- 
utes, to provide for the proper classification and arrangement for 
public inspection of copies of patents and models, specimens, etc., 
as may be deemed necessary and acceptable by the commissioner. 
In view of the fact that examinations are made by the public, as well 
as by the examiners in the Patent Office, by inspection of drawings and 
specifications of patents, it is believed that this section as amended 
sets forth the proper manner in which the public records of the Patent 
Office shall be kept. Section 484 now contains provision for the 
maintenance of a model room, which has long since been eliminated 
from the Patent Office and the space occupied thereby used for the 
storage of copies. 

Sections 9 and 10 correspond to sections 485 and 486, Revised 
Statutes, with such slight modifications as are necessary for the con- 
duct of business. 

Section 11 provides for the creation of a patent bar. Under sec- 
tion 487, Revised Statutes, the Commissioner of Patents, with the 
approval of the Secretary of the Interior, is authorized to refuse 
to recognize any patent agent who was guilty of ''gross misconduct," 
and upon that ground alone. Under rules promulgated by the Com- 
missioner of Patents, with the approval of the Secretary of the Inte- 
rior, a register of attot*neys has been adopted on which the names of 
persons entitled to practice before the Patent Office have been entered, 



6 CODIFICATION OF THE PATENT LAWS. 

it being required by such rules that attorneys who desire to be reg- 
istered shall have certain qualifications which will enable them to 
give applicants valuable service. There are now approxim^-tely 
10,000 names entered upon this register of attorneys. Many of 
these persons who have qualified are believed to have registered 
their names merely in order that they might place upon their letter- 
heads the words ''' patent attorney" as a business advertisement. 
Experience has already shown that many attorneys who were able 
to qualify for registration under the present rule have subsequently 
shown themselves to be incompetent to give applicants valuable 
service. Many of the registered firms are no longer in existence and 
many of those registered do not have any active business before the 
Patent Office. In view of these conditions, it is proposed by the 
present measure to require a higher standard of qualifications for 
registry and to require a nominal annual fee in order to provide for 
the elimination of the names of such persons as do not practice actively 
before the Patent Office. 

In recent years a large number of patent attorneys have engaged 
in advertising. The character of this advertising in many instances 
is such as to cause the unwary inventor to believe that great induce- 
ments are held out to him for simple inventions and he is gradually 
lured on until considerable sums of money have been obtained from 
him without any adequate return of services. It is proposed by this 
measure to provide a board which will review the advertising of all 
patent attorneys practicing before the Patent Office and censor such 
as is contrary to the ethics of the legal profession. The necessity for 
such a provision is imperative and will receive the hearty indorse- 
ment of the best members of the bar as well as members of the pub- 
lic having to do with patent matters. 

Section 12, which provides for the printing and photolithographing 
of copies of patents and documents issued by the Patent Office, has 
been revised in substantial accordance witli a bill relating to print- 
ing introduced by Senator Smoot in the present Congress (S. 4239), 
the modifications there found being merely such as in my opinion are 
necessary to the proper conduct of business before this office. The 
sections of the present law relating to the same are sections 488 to 
494, inclusive. Revised Statutes. 

It is believed that if the proposed bill becomes a law, the elimina- 
tion of tlic library edition, the change in fees for the Official Gazette, 
etc., will cause an increase in the savings of the Patent Office of 
$100,000 annually. 

Section 13 provides that the disbursements of the Patent Office 
shall be made by the financial clerk of the Patent Office instead of 
the disbursing clerk of the Interior Department, which, of course, is 
necessary if the Patent Office is made an independent bureau. The 
section of the present law relating to the same is section 496, Revised 
Statutes. 

Section 14, which relates to the certification of records in the 
Patent Office, consists in such an amendment to section 892, Revised 
Statutes, as will authorize the commissioner, the first assistant com- 
missioner, or the assistant commissioner to authenticate such docu- 
ments. 

Section 15 is identical with section 893, Revised Statutes. 



CODIFICATION OF THE PATENT LAWS. 7 

No provision has been made for the printing for gratuitous dis- 
tribution and deposit in the capitols of the States and Territories, 
and in the clerk's offices of the district courts, of the certified copies 
of patents which are known at the present time as the '^Library 
edition." Correspondence with the various recipients of these publi- 
cations indicates that it is practically useless to them. Under the 
bill relating to the printing and distribution of Government publica- 
tions, S. 4239, the printing of this publication has been eliminated. 

Section 16 provides that section 4883, Revised Statutes, shall be 
amended by the addition of a clause authorizing the Commissioner of 
Patents to designate a secretary to sign patents for inventions, also 
patents for designs and certificates of registration of trade-marks and 
labels. This amended clause conforms as nearly as possible to the 
law which authorizes the President to appoint a secretary to sign land 
patents. As previously poin.ted out, under the law of 1790, a patent 
was required to be signed by the Secretary of State, the Secretary of 
War, and the Attorney General, and countersigned by the President. 
Under the act of 1870 all patents were required to be signed by the 
Commissioner of Patents and countersigned by the Secretary or the 
Assistant Secretary of the Interior. This was found to be a needless 
duplication of the work, and in 1902 an act was passed which elimi- 
nated the requirement that the patent be countersigned by the Sec- 
retary or the Assistant Secretary of the Interior. 

The signing of patents is an onerous task, the average weekly issue 
comprising from 700 to 1,000 patents. Of course it is impossible for 
. the commissioner to review the subject matter or text of each of the 
patents as he signs the same, and it is in effect merely a perfunctory 
duty performed in compliance with the requirement of law. I am 
of the opinion that there is absolutely no necessity that patents shaU 
receive the personal signature of the commissioner or of the acting 
commissioner, and that this form of duty may properly be delegated 
to a competent and reliable secretary, as such duty is now delegated 
to a secretary in signing land patents granted by the United States. 

Section 17 comprises section 4884, Revised Statutes, as it now 
stands, with the addition of two amendments, the one providing 
that the term of the patent shall be limited to expire 19 years from the 
date of filing the application in this country, exclusive of the time 
consumed by the Patent Office or the courts in considering the appli- 
cation, and of such time as the issuance of the patent is delayed by 
interference proceedings. The object of this provision is to encourage 
the speedy issuance of letters patent and to prevent applicants from 
holding their applications in the office awaiting developments of the 
art by others and thereafter taking out broad patents which cause those 
who have made independent inventions during the pendency of the 
application to pay tribute to an applicant who has merely laid in wait 
for such developments. The second amendment to this section com- 
prises a clause providing that if the invention is not adequately worked 
or manufactured within the United States at any time after the ex[)ira- 
tion of the first four years, the owner of the patent may be compelled 
to license any person who shall demand the same to manufacture, use, 
and sell the ])atented invention upon such terms as may be prescribed 
by the judge of the court of the district in which the owner of the 
patent resides or has an established place of business. Nearly aU 
countries, except the United States, have provisions of law requiring 



8 CODIFICATION OF THE PATENT LAWS. 

working of a patented invention, and in the event of failure to ade- 
quately work the invention, that the patent shall either be revoked, 
or that the owner thereof shall be required to grant a license to others 
to manufacture, use, and sell the same. In my opinion the so-called 
working clause contained m the laws of other countries are of such a 
drastic nature as to discourage invention. 

While of course it is desirable that valuable inventions shall be 
manufactured and sold within a reasonable period from the date of 
the grant of the patent and not locked up by large corporations, as is 
now the case, in some instances, it is believed that the inventor or 
owner of the patent should in no case be deprived of a reasonable 
remuneration lor the invention which he has patented and thus dis- 
closed to the public. In the amendment which I have prepared to 
this section it is provided that if the patented invention is not worked 
to an adequate extent after the expiration of the first four years any 
person may demand a license to m-anufacture and sell the same, and 
upon the refusal of the patentee to grant such license shall have the 
right to apply to the court of the district in which the owner of the 
patent resides or has an established place of business and to demand 
an order from the judge requiring that the owner of the patent shall 
grant to him a license to manufacture, use, and sell the invention 
upon such terms, conditions, security, etc., as in the opinion of the 
caurt will be just. It is believed that such a measure will have the 
effect of placing all valuable inventions in public use within a reason- 
able time and will also encourage the establishment in the United 
States of manufactories for the production of patented machines, 
devices, etc., which have been patented by persons who are not citi- 
zens of the United States. 

Care has been taken in drafting this section to provide that nothing 
therein shall conflict with any treaty or convention of other countries 
which reciprocally lessens the force of its application to the citizens 
of the contracting countries. 

Section 18 is identical with section 4885, Revised Statutes. 

Section 19 comprises section 4886, Revised Statutes, and an act 
of March 3, 1883, relating to the granting of patents to officers and 
employees of the United States without payment of fees, the words 
*'the Secretary of the Interior and" being eliminated from the first 
line of the added paragraph. • 

Section 20 comprises section 4887, Revised Statutes, with the addi- 
tion thereto of a specific provision under which a person desiring to 
rely upon an apphcation filed in a foreign country under the inter- 
national convention for the protection of industrial property shall 
present his application. This added section is in strict conformity 
with the international convention for the protection of industrial 
property signed by the United States delegates in Washington on 
June 2, 1911. There is also added to this section a clause which is 
identical with section 4923, Revised Statutes, which relates to the 
same subject matter and, in my opinion, should properly be a part 
of this provision. 

Section 21 comprises section 4888, Revised Statutes, with the 
addition of a clause prescribing that every foreign applicant for a 
patent shall designate some person within the United States upon 
whom service of proceedings affecting the application or the patent 
granted thereon may be served with the same force and efl'ect as if 



CODIFICATION OF THE PATENT LAWS. 9 

served upon the applicant or the owner of the patent in person. 
The reason for this provision is that under the law interfering patent 
suits may be brought where two patents have been granted to differ- 
ent persons for the same invention, a situation which frequently 
occurs where an applicant for a patent is placed in interference with 
a prior patentee and after due proceedings had is found to be the 
first inventor of the subject matter claimed. Under the present 
law there is no manner in which an interfering patent suit may be 
instituted between a domestic patent and a foreign patent if the 
owner of the foreign patent has no representative in the United States. 
This might result in the apparent continuance of two patents, one 
of which must necessarily be invalid, with no power by the courts to 
settle the uncertain question of the ownership of the invention 
covered by these patents. This provision would also be necessary 
to the obtaining of compulsory licenses from foreigners. (See sec. 17 
above.) 

Section 22 comprises section 4889, Revised Statutes, with an 
amendment that an application shall comprise, in addition to the 
drawing now required, such additional copies, photolithographic or 
otherwise, as the Commissioner of Patents may prescribe. This 
section is substantially identical with H. R. 7711, which has been 
favorably reported to the House by the Committee on Patents in the 
present session. Since dictating this draft, H. R. 7711 has been 
passed by the House and will undoubtedly pass the Senate at an 
early day. 

Sections 23, 24, and 25 are identical with sections 4890, 4891, and 
4892, Revised Statutes. 

Section 26 comprises section 4893, Revised Statutes, modified by 
the substitution of the word ^^ applicant" for ^'claimant," the reason 
for such substitution being that applicants for patents are not claim- 
ants in the proper sense of the word. This clerical change is merely 
in the interests of accuracy. There is also added to section 4893, 
Revised Statutes, section 7 of the act approved March 3, 1897, 
which provides that the examination of an application may be 
expedited upon the request of the head of any department of the 
Government. This clause relates to the same subject matter as 
section 4893 and should be made a part thereof. 

Section 27 is identical with section 4894, Revised Statutes, except 
that the period in which applicants are required to prosecute their 
applications after an office action is reduced from one year to six 
months. This section is identical with H. R. 7712, which is now 
under consideration by the House Committee on Patents. 

The reasons for this bill, as stated before the committee, are in the 
interests of expediting the final disposition of applications pending 
before the Patent Office. That patents should be granted as speedily 
as possible and placed in the hands of the public is of course desir- 
able, and considerable criticism has been made in recent years of 
the provisions of law which permits applicants and manufacturers 
who desire to do so to retain applications in the Patent Office for 
many years and to use the same as a ''dragnet" to scoop in the 
inventions of others which have been conceived and matured and a 
business established thereon during the pendency of those old appli- 
cations, to the detriment of the later inventor, who has, of 
course, no knowledge of the pendency of applications claiming such 
inventions. 



10 CODIFICATIO^^ OF THE PATEXT LAWS. 

Section 28 is identical with section 4895, Revised Statutes, except 
for the omission of the last clause of said section, which is as follows: 

Unless the patent was issued and the assignment made before the eighth day o f 
July, eighteer hundred and seventy. 

All patents to which this clause relates have, of course, long since 
expired. 

Section 29 is identical vntli section 4896, Re^dsed Statutes. 

Section 30 is identical with section 4897, Revised Statutes, except 
that the time ^^^thin which an applicant is permitted to renew an 
allowed application is cut down from two years to one. The reason 
for this change is also to prevent the long pendency of applications 
in the Patent Office. 

Section 31 is identical with section 4898, Revised Statutes. 

Section 32 includes the provisions of section 4899, Re^ased Stat- 
utes, ^\'ith the addition thereto of a clause providing that the pur- 
chaser or lessee of a patented machine or article shall have the 
unrestricted right to use, vend, or lease the particular thing so 
purchased. 

Under the present law, as interpreted by the court, the owner of a 
patent is "a czar in his own domain," and may fix the price and con- 
ditions under which patented articles may be sold, and an}" person 
violating such conditions or restrictions may be sued and held guilty 
of contributory infringement. The intention of this provision is to 
prevent restrictions which would cause the purchaser or lessee of a 
patented machine or article to be obliged to contract with the owner 
of a patent for supplies to be used in such machines, or to agree not 
to sell the patented article for less than a certain stated price. Many 
cases might be cited in which the court has held that a party selling 
a second-hand article for less than the price fixed by the owner of the 
patent has been held for contributory infringement, a notable exam- 
ple of which is found in a recent case in which certain phonographic 
records, which were damaged by fire, were purchased at auction, and 
the purchaser was afterwards sued for infringement because he sold 
these records at a price less than the price fixed by the owner of the 
patent. It is believed that the pro\^sion contained in the present 
draft will prevent such injustice, and ^^dll also promote the freedom 
of sale of patented machines and articles. 

Section 33 is identical with section 4900, Revised Statutes. 

Section 34 comprises section 4901, Revised Statutes, with the addi- 
tion after the word ''patented" in the third line of paragraph 3, of 
the words ''or the words 'patent applied for,' when in fact no appli- 
cation for patent has been filed or when an application which 
had been filed has become abandoned." This section provides 
that any person who makes an article \yith. the words "pat- 
ented," "patentee," or "letters patent" upon it, when the device is 
not patented, for the purpose of deceiving the public, shall be liable to 
a penalty for such deception. It frequently happens that devices 
for whicli no application for patent has been made are marked ' 'patent 
applied for" and also that to devices for which application for patent 
has been made and the application refused and finally abandoned, the 
same legend is still applied. My attention has also recently been 
called to the fact that certain attorneys who are employed by appli- 
cants to make a preliminary search to determine whether or not a 
device is patentable, will advise their clients that in their opinion the 



I 



CODIFICATION OF THE PATENT LAWS. 11 

device is not patentable, but that if they desire protection, they will 
file their applications in order that they may mark the articles ''patent 
applied for," which they advise them will afford almost the same pro- 
tection as if the articles were actually patented. This, of course, is 
clearly an intent to deceive the public, since the applicant, acting on 
the advice of the attorney, has reason to believe that he can not ob- 
tain a patent upon the article which he marks ''patent applied for." 
Applications of this character are of course held pending in the Patent 
Office as long as possible, in order to afford the applicant as "great a 
measure of protection as possible." It is believed, however, that by 
the more rapid disposition of applications which would be obtained 
under the terms of the proposed bill, if the same becomes a law, this 
deception of the public can be very largely avoided by the inclusion 
of the amendment above quoted. 

Section 35 is a new section proposed as a substitute for section 4902, 
Kevised Statutes, which relates to caveats and was repealed by an 
act of Congress effective July 1, 1910. That section provided inter 
alia that caveats "shall be filed in the confidential archives of the 
office and preserved in secrecy." There is in the present law no 
express provision requiring that applications for patents shall be 
preserved in secrecy, although as a matter of fact all pending applica- 
tions and also abandoned applications are preserved in secrecy. 
It is proposed by a new paragraph to provide by law that applica- 
tions pending in the Patent Office shall be preserved in secrecy ex- 
cept in cases where it shall be necessary for the proper conduct of the 
business of the Patent Office or the courts that they shall be dis- 
closed to particular persons for a particular purpose. The proposed 
section comprises merely a statement of the practice which now ob- 
tains and has obtained in the Patent Office for many years. 

It may be stated in this connection that in certain cases the courts 
have held that applications for patents were not required to be 
maintained in secrecy by the statute; for example, in the Electric 
Light Co. V. United States Electric Lighting Co. (45 Fed. Rep., 55), 
Judge Lacombe of the southern district of New York said: 

Congress, in the very statute which required inventors to file applications in the 
Patent Office, expressly provided that all applications interfering with caveats should 
be deposited in the confidential archives, and be therefore privileged. (R. S., sec. 
4902.) If all applications were thus privileged, this provision would have been un- 
necessary, and the fact of its enactment seems to indicate quite clearly that Congress 
having the whole subject under advisement, determined that it would extend the 
privilege to the particular class of applications therein specified, and, inferentially, 
only to them. 

In the case of United States ex rel. Pollok v. Hall, Commissioner of 
Patents (48 O. G., 1263; C. D., 1889, 582), the Supreme Court of the 
District of Columbia held that applications iii the Patent Oflice were 
public records and that anyone upon a proper request could obtain 
copies thereof under section 892 of the Kevised Statutes. This 
holding, however, was overruled by later decisions of the same court 
in United States ex rel. Electric Light Co. v. Commissioner of Patents 
(54 O. G., 267; C. D., 1891, 271 ; 19 D. C, 233) ; United States ex rel. 
Fowler v. Commissioner of Patents (62 O. G., 1968; C. D., 1893, 268) ; 
United States ex rel. Bulkley v. Butterworth, Commissioner of Pat- 
ents (81 O. G., 505; C. 'D., 1897, 685). 

In view of the uncertainty thus arising, it is believed tliat the law 
providing that applications shall be maintained in secrecy should be 



12 CODIFICATIOX OF THE PATENT LAWS. 

made explicit. It is obvious that if applications for patent were not 
maintained in secrecy the files of the Patent Office would be con- 
tinually searched by people who desire to obtain knowledge of others' 
inventions for the purpose of interference or otherwise, and would lead 
to the appropriation by unscrupulous parties of inventions made by 
others. It would enable unscrupulous persons who were involved 
in interference to obtain the approximate date of their adversary's 
invention and enable them to defeat, with unscrupulous assistance, 
the rights of the true inventor. It is believed that the necessity 
for a provision of this character is so obvious that it needs no further 
comment. 

Section 36 is identical with section 4903, Revised Statutes. 

Section 37, which corresponds to section 4904, Revised Statutes, 
relates to the scope of inquiry in interference cases. Section 4904, 
Revised Statutes, provides that whenever an application is made for 
a patent the claims of which interfere with those of a pending appli- 
cation or an unexpired patent an interference shall be declared, and 
that the commissioner ''shall direct the primary examiner to pro- 
ceed to determine the question of priority of invention." The Su- 
preme Court of the United States in the case of Lowry v. Allen (203 
U. S., 476) concurred with the views expressed by the Court of 
Appeals of the District of Columbia in the decision appealed from 
that 'Hhe statutes provide only for appeals upon the question of 
priority of invention" in interference cases. The scope of inquiry, 
therefore, in interference cases is confined to that of priority, not- 
withstanding the fact that the testimony presented might suggest 
the existence of other statutory bars to the grant of a patent to one 
or both interfering parties. In the case of Burson v. Yogel (29 App. 
D. C, 388) the Court of Appeals of the District of Columbia declined 
to consider the question of a statutory bar of public use against the 
party Burson, which was raised in an interference proceeding, stating 
that the '' nuestion is one for the consideration of the commissioner on 
the final allowance of the patent." Again, in the case of Gueniffet, 
Benoit & Nicault v. Wictorsohn (30 App. D. C, 432) the court said: 

* * * It is unnecessary to determine what right either of the parties ultimately 
may have to a patent under their pending applications — 

the only question involved being that of priority of invention. 

In the more recent case of Norling v. Hayes (166 O. G., 1282) the 
court refused to consider whether Hayes was barred from receiving 
a reissue patent by reason of intervening rights upon the ground that 
this question was not a question of priority of invention. It fre- 
c[uentlv happens that although in interference proceedings evidence 
is available which shows that one or both of the parties is not entitled 
to a patent, the commissioner is without authority to consider such 
testimony in the interference proceeding. 

It is therefore proposed to amend section 4904 in such a manner as 
to give authority of law for the enlargement of the inquiry into all 
<:iuestions wliich affect the right to a patent of any of the parties 
involved in the interference. To attain this end, substantially the 
same phraseology as that found in the trade-mark statutes has been 
adopted, to wit, that the commissioner ''shall direct the examiner of 
interferences to determine the question of priority of invention and 
the right of applicant or respective applicants to a patent." The 



CODIFICATION OF THE PATENT LAWS. 13 

trade-mark statute relating to interferences, which provides that in 
every case of interference the commissioner shall direct the examiner 
of interferences to determine the question of the right of registration 
of such trade-mark, has been adjudicated by the Court of Appeals 
of the District of Columbia, and in its decisions it has held that in 
''a trade-mark interference proceeding the issue which the commis- 
sioner is called upon to determine is not merely one of priority, as 
in a patent interference proceeding, but involves any question that 
might be raised in an ex parte case/' (In re Herbst, 32 App. D. C, 
565.) 

It is believed that if the law is thus amended and the scope of 
inquiry in patent cases extended in this manner, any patent which 
contains claims awarded as a result of such interference proceeding 
would be held by a court in a suit for infringen>ent to be prima facie 
valid, so far as these claims are concerned, and a preliminary injunc- 
tion promptly issued upon the showing of infringement by another. 
At the present time it is well known that a preliminary injunction 
will not be issued upon a green patent unless special circumstances, 
such as those involved in a fraudulent appropriation of the invention, 
are shown. It is ordinarily necessary to have had an adjudication 
of the patent before preliminary injunction will be issued, or unless 
it be shown that by public acquiescence for a considerable period the 
validity of the patent should be presumed. It will thus be seen 
that the objects of the proposed amendment are twofold — first, to 
prevent the improper issuance of a patent when a statutory bar exists 
against the grant of the patent to such a party, and second, to cause 
patents which have been granted after interference to have a greater 
presumption of validity. 

Section 38 is identical with section 4905, Revised Statutes. 

Section 39 is the same as section 4906, Revised Statutes, with the 
insertion after ^^ contested case,'' line 3, of the words ^'or other pro- 
ceeding." This section provides for the issuance of a subpoena by 
any clerk of any court of the United States in any case where testi- 
mony is to be taken for use in the Patent Office in any contested case. 
It is proposed to extend this right to issue a subpoena to other pro- 
ceedings which are not strictly contested cases for the purpose of 
enabling the commissioner to attain evidence in this manner to pre- 
vent the improper issuance or refusal of a patent. 

Sections 40 and 41 correspond to sections 4907 and 4908, Revised 
Statutes, respectively. 

Section 42 corresponds to section 4909, Revised Statutes, except 
for the necessary modification to provide that appeals from the 
decision of the primary examiner or from the decision of the examiner 
of interferences shall lie to the board of appeals which is created by 
this act, instead of to the examiners in chief, as now provided for by 
section 4909. 

Section 4910, Revised Statutes, which relates to appeals from the 
examiners in chief to the commissioner, has of course been omitted. 

Section 43 corresponds to section 4911, Revised Statutes. This 
section formerly providing for appeals from the commissioner to the 
Supreme Court of the District of Columbia sitting in banc, and 
amended by section 9 6f the act of February 9, 1893, to vest this 
jurisdiction in the Court of Appeals of the District of Columbia, has 



14 CODIFICATION OF THE PATENT LAAVS. 

been modified to provide for appeals from the board of appeals in the 
Patent Odice to the Court of Appeals of the District of Columbia. 
This involves merel}^ a change in phraseology. 

Section 44 is identical with section 4912, Revised Statutes, and 
has merely been changed in phraseology to accord with the provi- 
sions of the preceding section. 

Section 45 is identical with section 4913, Revised Statutes. 

Section 46 includes the provisions of section 4914, Revised Statutes, 
with the addition thereto of a proviso that where any patent com- 
prises claims which have been adjudicated in an interference pro- 
ceeding upon testimony and hearing duly had shall be regarded as 
adjudicated in respect to such claims. This is merely a specific 
embodiment in the statute of the rights which flow from the modi- 
fied section relating to interferences (sec. 4904, R. S.), as pointed 
out in the above discussion of the provisions of that section. 

Section 47 comprises section 4916, Revised Statutes, with the 
addition of a provision authorizing the Commissioner of Patents to 
issue a certificate of correction in conformity with the records and 
files of the Patent Office whenever, in his opinion, a patent issued 
by the Patent Office does not conform to the records and files of that 
office. The added clause is identical with the provisions of H. R. 
7710, which is now pending before the Committee on Patents of the 
House, and has been discussed at several of the hearings. It has 
been pointed out that the object of this section is merely to correct 
printers' errors and errors due to the faulty entry of amendments in 
cases. Certificates of correction are now issued in accordance with 
rule 170 of the Rules of Practice of the Patent Office, but such cor- 
rections are not directly authorized by law. At the present time 
where errors arise in the claim the Patent Office reissues the patent 
at the expense of the Patent Office, but it is doubtful whether a 
reissue without fee is valid, since section 4934, Revised Statutes, 
which fixes the fees in patent cases, contains the proviso '^On every 
application for the reissue of a patent, thirty dollars." It is manu- 
festly unjust to require a patentee to pay a fee of $30 for the cor- 
rection of a mistake which is not due to his fault, but wdioUy to the 
fault of the Patent Office or of the printer, and it certainly is not 
right to grant a patent to him without fee if the validity of the 
patent can thereafter be questioned, because of the failure to com- 
ply strictly with the requirements of the statute. 

Section 48 is identical with section 4917, Revised Statutes, except 
for the substitution of the word ' 'patentee" for ''claimant." Pat- 
entees are not claimants in the strict sense of the word, and this sub- 
stitution is made merely in the interest of accuracy. 

Sections 49, 50, and 51 are sections 4918, 4919, and 4920, Revised 
Statutes, respectively. 

Section 52 comprises section 4921, Revised Statutes, with the 
addition of the act of June 25, 1910, providing for suits in the Court 
of Claims, omitting, however, the ])rohibition of the benefits of that 
act to employees of the Government. 

Section 53 is identical with section 4922, Revised Statutes, with 
the addition of the provision of section 973, which pertains to the 
same subject matter and is properly a part oif that section. 

Section 54 corresponds to section 4934, Revised Statutes, which 
fixes the rates for patent fees, comprises a modification of that sec- 



CODIFICATION OF THE PATENT LAWS, 15 

tion, and provides that the first fee for an apphcation shall be $20 
instead of $15, and that the final fee shall be $15 instead of $20, as 
obtains at the present time. The reason for this change is that the 
first or filing fee is for the j)urpose of defraying the expense of the 
examination of the application, which entails the greatest expense 
connected with the issuance of patents. The final fee is for the pur- 
pose of defraying the expense of printing the patent, the printing of 
the Official Gazette, etc. A large number of applications which are 
examined and found to be allowable are subsequently abandoned by 
the applicants and no final fee is therefore received, although the 
majority of the work has been done and the greater part of the expense 
borne by the office. By the reversal of these fees no patent actually 
granted will cost the patentee any more than at the present time, 
and the increase in fee for examination of cases which are refused or 
which become abandoned is not so great as is warranted by the in- 
creased labor involved by the ever-expanding field of search. It is 
to be noted in this connection that the fees for applications, which at 
present obtain, were fixed by the act of March 2, 1861 (12 Stat. L., 
346), at which time the entire number of patents was 46,162, com- 
pared with 1,030,000 at the present time, to say nothing of the 
increased field of search in foreign patents and also publications. 

Section 4934 has been further amended by the provision that the 
fee for an appeal from the primary examiner or the examiner of inter- 
ferences to the board of appeals shall be $15, and by the elimination 
from the section of the fee of $10 for an appeal to the examiners in 
chief from the lower tribunals, and of the fee of $20 for an appeal from 
the examiners in chief to the commissioner. It will thus be seen that 
a single appeal which costs the appellant $15 is substituted for the two 
appeals which are now required to obtain a final decision in the 
Patent Office at a cost of $30. This will be a great saving of expense 
to the applicant, not only in the appeal fees, but also in the attorneys' 
fees, since one argument replaces the two which are now required. 

This section has been also amended to provide that fees received for 
manuscript copies will constitute a fund out of which qualified type- 
writers designated by the Civil Service Commission for a temporary 
service for making such copies shall be employed at a rate of $2.50 
per diem. This provision is to give elasticity to the force required to 
make copies of records in the Patent Office. It is found that owing to 
the influx of work at certain portions of the year and to the depletion 
of the force during the vacation season, the work of making copies of 
the records of the Patent Office accumulates to an alarming extent. 
There is no such uniform demand for records as would requu*e a 
greatly increased force throughout the whole year, and it is believed 
that by the incorporation of this special provision the work may be 
kept up to date in the most economical manner. The temporary 
increase pf force would be used but for a single month or two months, 
as found necessary. 

Sections 55 and 56, which correspond to sections 4935 and 4936, 
Revised Statutes, have been amended slightly to facilitate the man- 
ner in which the Patent Office may handle the fees which are paid in. 
Under the law as interpreted by the Comptroller of the Treasury all 
fees which are received in the Patent Office must be turned into the 
Treasury, although the party paying the fee discovers that it has 
been paid by mistake, or the office finds that the fee can not be 



16 



CODIFICATION OF THE PATENT LA 



LIBRARY OF CONGRESS 

illlillllllllllliilllilllllllil 



applied. It is believed that sufficient discretion 
the Commissioner of Patents to return such fees 
the party to go through the red tape of applyii ^ 030 016 942 i 
Department for the return of the fee and having a special report 
made in each case. There are daily instances in which a party 
desiring copies of patents will send a sum sufficient to more than 
cover the expense of such copies, and under the law as now inter- 
preted the commissioner is without authority to take from the sum 
the amount necessary to pay for the copies, but must turn the entire 
amount into the Treasury, and the party sending the money will then 
be required to make applications of the Treasury for the return of 
the excess amount, even though it be no greater than 5 cents. The 
object of this change is merely to enable the Patent Office to do a 
little banking business in an expeditious manner. The records of 
all moneys paid in are kept in duplicate and are daily checked up and, 
of course, the books of the Patent Office are always open for the 
inspection of the Auditor for the Interior Department. 

Section 4915, Revised Statutes, has been omitted since practically 
the same remedy will be. available under the provisions of section 39 
of this bill. Furthermore, the repeal of this section will make the 
decision of the Court of Appeals of the District of Columbia final in 
respect to applications for patents. Under the present law as inter- 
preted by the Supreme Court of the United States in re Frasch, 211 
U. S.,. 1, and Johnson v. Mueser, 212 U. S., 283, decisions of the Court 
of Appeals of the District of Columbia are not final decisions either 
in ex parte or in interference cases. 

o 



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